Tuesday, August 04, 2015

The Board granted Respondent Meenakshi's motion for partial judgment in this cancellation proceeding, ruling that Petitioner VVV's claim against one of the three challenged registrations was barred by the doctrine of claim preclusion. VVV had opposed the application underlying that one registration, but VVV failed to prosecute the opposition. As a result, judgment with prejudice had been entered against VVV. V.V.V. & Sons Edible Oils Limited v. Meenakshi Overseas LLC d/b/a Meenakshi Overseas, Cancellation No. 92060602 (July 15, 2015) [not precedential].

Claim preclusion (or res judicata) applies when there exists "(1) an identity of parties or their privies; (2) a final judgment on the merits of the prior claim; and (3) the second claim is based on the same transactional facts as the first and should have been litigated in the prior case."

As to the parties, Respondent Meenakshi claimed to be in privity with the defendant in the opposition, one Anil Ghandi, by reason of an assignment. The Board found no genuine issue of material fact regarding privity.

Nor was there a genuine dispute of material fact "that there has been a final judgment on the merits of an earlier claim since a default judgment can operate as such for purposes of res judicata."

Finally, the opposition and the cancellation proceeding involved the same set of transactional facts. In both proceedings VVV asserted a claim of priority and likelihood of confusion against the same mark and goods based on the same pleaded common law mark. Although in the cancellation proceeding VVV described its goods more broadly, they encompassed the goods pleaded in the opposition, and did not change the "transactional facts." The same held for VVV's newly pleaded dilution claim, particularly in view of its allegation in the opposition that its mark was "well known."

And so the Board ruled that doctrine of claim preclusion barred VVV's claim against Respondent Meenakshi's third registration.

TTABlog comment: Since VVV could have pleaded dilution in the opposition, shouldn't that claim be precluded anyway by VVV's failure to bring it in the opposition, regardless of whether it claimed that its mark was well known?